WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eli Lilly and Company v. Expired Domains LLC
Case No. D2013-1121
1. The Parties
The Complainant is Eli Lilly and Company of Indianapolis, Indiana, United States of America, represented by Faegre Baker Daniels LLP, United States of America.
The Respondent is Expired Domains LLC of Houston, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cialisenespanol.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2013. On June 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on July 29, 2013.
The Center appointed Dennis A. Foster as the sole panelist in this matter on August 26, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Since 2003, the Complainant, a United States of America company, has sold pharmaceutical products under its CIALIS brand name on a worldwide basis. The Complainant has obtained valid trademark registrations from the proper authorities in numerous countries, including the United States Patent and Trademark Office (“USPTO”), for the CIALIS mark (e.g., USPTO Registration No. 2,724,589; registered June 10, 2003).
The Respondent registered the disputed domain name <cialisenespanol.com> on March 24, 2011. The disputed domain name resolves to a website that presents links to other websites that offer what are purported to be versions of the Complainant’s CIALIS products as well as products of the Complainant’s chief competitors.
5. Parties’ Contentions
- The Complainant’s predecessor-in-interest filed a USPTO trademark application for the CIALIS mark as early as June, 1999, and the corresponding trademark registration was obtained by 2003. The decision to use the CIALIS trademark in connection with pharmaceutical products was made in 2001, and by 2003 the Complainant was using that mark in conjunction with sales of such products.
- The Complainant has spent millions of dollars to promote its products sold under the CIALIS mark, and the most recent annual worldwide sales of such products amounted to nearly USD 2 billion. The Complainant also uses its website, found at “www.cialis.com”, to advertise and sell the aforesaid products.
- The Complainant’s CIALIS trademark is distinctive, as found by several prior UDRP panels, and the disputed domain name is confusingly similar to the mark. The disputed domain name contains the full CIALIS mark and merely adds the term, “en espanol”, which means “in Spanish” in English. The inclusion of the descriptive term, “espanol” or “en espanol”, in a disputed domain name does not serve to avoid a finding of confusing similarity between it and a conjoined trademark, as has been noted in many prior Policy decisions.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has given the Respondent no license, authorization, permission or consent to use the CIALIS mark.
- The website to which the disputed domain name resolves is a blog with links to an online pharmacy that offers advertising for and counterfeit and/or illegal versions of the Complainant’s products as well products, such as VIAGRA and LEVITRA, of the Complainant’s direct competitors. Moreover, an Internet user may click on various icons found on the linked web pages to discover how to obtain those products in Spain. Such use neither demonstrates a legitimate right or interest in the disputed domain name nor does it constitute a bona fide offering of good or services.
- The Respondent’s website also engages in a search optimization scheme whereby the Complainant’s highly distinctive mark is used to divert Internet users to competing websites. Again, such use is not legitimate.
- The disputed domain name was registered and is being used n bad faith. Due to trademark registration and substantial media coverage, the Respondent had constructive knowledge of the Complainant’s trademark; actual knowledge was also most likely present at the time of disputed domain name registration, given the fame of that mark.
- The Respondent is using the CIALIS mark in the disputed domain name to divert Internet users to the Respondent’s website for financial gain. Furthermore, by linking Internet users to online pharmacies, the Respondent is using the disputed domain name in contravention of European laws that prohibit advertising and/or sales of certain pharmaceuticals by such means. That potentially illegal activity is done by the Respondent in bad faith.
- The Respondent’s bad faith use of the disputed domain name to offer online drug procurement may place Internet consumer at risk of harm, as the drugs are not offered in compliance with the regulations of the proper governmental authorities.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraphs 4(a)(i) – (iii) of the Policy, the Panel may find in the Complainant’s favor, and order a transfer of the disputed domain name <cialisenespanol.com> if the Complainant can demonstrate that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established its rights in the CIALIS trademark by providing the Panel with direct evidence (Annex 6) of the Complainant’s valid USPTO trademark registration for that mark. See, The Schneider Group, Inc. v. Jack Mann, WIPO Case No. D2010-0448 (“The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.”); and Lilly ICOS LLC v. Andrew Riegel, WIPO Case No. D2006-1088 (“The Panel finds that the Complainant’s registration with the USPTO sufficiently establishes the Complainant’s rights in the CIALIS mark.”).
The Panel can see that the disputed domain name <cialisenespanol.com> is not identical to the CIALIS trademark, because that name also contains the term “en espanol”. However, the Panel believes that the addition, Spanish for “in Spanish”, fails to distinguish the disputed domain name from the trademark in any relevant manner. Instead, the disputed domain name suggests that the Complainant’s trademarked goods may be accessed by Spanish language speakers at the website connected to the name. Thus, those Internet users likely would be confused as to the relationship between that name and the mark. Also, the ending, “.com”, provides no meaningful distinction because all domain names are required to possess a gTLD or ccTLD suffix. As a result, the Panel encounters no difficulty in concluding that the disputed domain name is confusingly similar to the Complainant’s CIALIS trademark. See, Weider Publications, Inc. v. Nextlevel.com, WIPO Case No. D2001-0050 (finding <mensfitnessespanol.com> to be confusingly similar to the MEN’S FITNESS mark); The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050 (finding all of the disputed domain names, <bbcenespanol.com>, <bbcenespanol.net> and <bbcenespanol.org>, to be confusingly similar to the BBC mark); and Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“…the addition of the generic top-level domain (gTLD) name ‘.com’ is likewise without legal significance since use of a gTLD is required of domain name registrants.”).
Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Given the difficulty in proving a negative proposition, a consensus of prior Policy panels have held that a complainant need present only a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name before that respondent must submit convincing evidence to rebut that case and establish those rights or interests. See, Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (“A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.”); and Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828 (“Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy [paragraph] 4(a)(ii).”). In this case, the Complainant has cleared this low hurdle by proving to the Panel’s satisfaction that the disputed domain name is confusingly similar to the CIALIS trademark and by asserting clearly that the Respondent has been given no license or permission to use that mark.
Failing to file a Response, the Respondent has come forth with no evidence, so the Panel will accept as true all of the Complainant’s reasonable allegations. See, Hyatt Corporation v. Sinichi Akiyama, NAF Claim No. FA839408 (“In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations…”); and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).
The Complainant contends, supported by adequate evidence, that the Respondent’s website connected to the disputed domain name serves to link Internet users to other websites that offer a variety of pharmaceutical products that either masquerade as or compete directly with the Complainant’s products marketed under the CIALIS trademark. As reasonably argued by the Complainant, the Respondent undoubtedly seeks some form of financial gain for furnishing such linkage. The Panel wholly agrees with the Complainant’s contention that this use of the disputed domain name constitutes neither a bona fide offering of goods or services, as referred to in Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use of the name as referred to in paragraph 4(c)(iii). See, Lilly ICOS LLC v. Andrew Riegel, WIPO Case No. D2006-1088 (“Because the Respondent is profiting from the links posted at its website, it is not using the disputed domain names in connection with a noncommercial or fair use as contemplated by paragraph 4(c)(iii) of the Policy. Because the Respondent is hosting links to websites in direct competition with the Complainant, the Respondent is not involved in a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy.”); and Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694 (“As a general matter, when the holder of a domain name that is confusingly similar to an established mark uses the domain name to divert Internet users to its own competing website for commercial gain, such use is neither a bona fide offering of goods and services, nor a legitimate non-commercial or fair use under paragraphs 4(c)(i) and (iii) of the Policy.”).
As “Expired Domains LLC” in no way resembles <cialisenespanol.com> visually, phonetically or as to meaning, there is no basis whatsoever for the Panel to conclude that the Respondent has been known commonly as the disputed domain name, as might otherwise bring Policy paragraph 4(c)(ii) into play.
Since there has been no effective rebuttal to the Complainant’s prima facie case, the Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Policy paragraph 4(b)(iv) lists a circumstance giving rise to a finding of bad faith registration and use of a disputed domain name, as follows: By using the domain name, the domain name registrant intentionally attempted to attract for financial gain Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
In this case, the Complainant has provided the Panel with compelling evidence (Annex 11) that the Respondent uses the disputed domain name to lure Internet users to its website that then provides links to other websites that offer products that either mimic or compete with the pharmaceutical products sold by the Complainant. The Panel agrees with the Complainant that the Respondent relies intentionally on the likelihood of confusion between the disputed domain name and the Complainant’s trademark to carry out this redirection of Internet traffic, and that the Respondent seeks to profit commercially from doing so. Accordingly, the Complainant has made out a clear case that the Respondent registered and is using the disputed domain name in bad faith per paragraph 4(b)(iv) of the Policy. See, Eli Lilly and Company v. Private Whois Service, WIPO Case No. D2011-0624; and Associated Newspapers Ltd. v. Domain Manager, NAF Claim No. FA201976 (“Respondent’s prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy because the domain name provided links to the Complainant’s competitors and the Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Therefore, the Panel concludes that the Complainant has proved that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cialisenespanol.com> be transferred to the Complainant.
Dennis A. Foster
Date: September 10, 2013